In a Trademark Case, The Supreme Court Recognizes That Art Flows From Multiple Sources

Last week, in Dastar v. Twentieth Century Fox Film Corp, the Supreme Court held that once a work's copyright terminates, it passes into the public domain, and trademark law does not prevent its use without attribution to the original author. The decision was 8-0. (Justice Stephen Breyer recused himself because his brother, also a federal judge, had heard the case in the lower courts.)

Along the way, the Court recognized what might be termed the river of creation: A piece of art, the Court observed, stems from multiple sources, like the "Nile and all its tributaries."

The Facts and Proceedings in the Dastar Case

The facts of the Dastar case are simple. In 1948, Fox acquired the copyright to produce a television series, called "Crusades in Europe," based on the book by then-General Dwight D. Eisenhower describing the Allied campaigns of World War II. In 1977, Fox failed to renew its copyright in the series. (The obligation to renew a copyright was eliminated in 1976, but it still applied for the earlier-created work.) Thus, the series fell into the public domain.

Later, another company, Dastar, purchased a copy of "Crusade in Europe." It then copied the film, made minor revisions to it, and repackaged it under a new title, "Campaigns in Europe."

In 1995 - the 50th anniversary of the end of World War II - repackaged under a new title, Dastar released "Campaigns in Europe" under Dastar's own name. It made no mention of either Eisenhower's book or Fox's original television series. And it charged $25 for the set--significantly undercutting Fox, which was now selling "Crusades in Europe" through New Line Home Video--at discount stores such as Best Buy and Costco.

Unable to bring a copyright claim, Fox sued Dastar employing other claims, including one for trademark infringement. Specifically, Fox argued that selling the videos without attribution constitutes "reverse passing off" under the Lanham Act, the federal statute that protects trademarks.

In trademark law, "passing off" occurs when the defendant uses the plaintiff's trademark on its own product. In contrast, "reverse passing off" occurs when the defendant passes off the plaintiff's trademarked product as the defendant's own, using a "false designation of origin."

In the lower courts, Fox won a whopping $1.5 million verdict (twice the amount of Dastar's profits on the video). But before the Supreme Court, Fox did not prove so wily.

The Court Contrasts Copyright and Trademark Protections

The Supreme Court's opinion turned, in part, on the meaning of "false designation of origin." Is a video's "origin" its producer (here, Dastar), or its original author or creator - here, Fox, though Fox itself had borrowed from others?

The Court held that, in the trademark context, "origin" means the producer, not the creator. In his opinion for the Court, Justice Scalia stressed the fundamental difference between copyright and trademark, as follows.

Copyright law protects the originality and creativity of authors, but only for a limited time. After a copyright expires, Scalia explained, "the public may use the invention or work at will and without attribution." (Emphasis added.) In contrast, a trademark protects consumers against confusion when they purchase products.

(The "without attribution" language is particularly significant. Europe recognizes authors' right to attribution as a "moral right." In the U.S., however, the prevailing view is that once an author sells or authorizes her work, she has no inherent right to credit for it. In Dastar, the Court adopted that view with respect to Lanham Act claims.)

Fox's lawyers had offered a "belt and suspenders" approach, arguing that their series was doubly protected by both copyright and trademark law. But the Court rejected that approach, suggesting that the two protections were for separate groups - copyright for authors, and trademark for consumers.

Were consumers misled here? The Court said no. In releasing the "Campaigns in Europe" video under its own name, Dastar had made a true designation of origin, correctly providing its own name as producer. (Dastar had, after all, made at least some revisions to the original). Had Dastar given consumers the impression that its video was significantly distinct from Fox's, then Fox might have had a claim of misrepresentation under the Lanham Act, the Court noted, but it had not.

Consumers knew who the video's producer was, and were not told that the video was any different from the Fox video. That, Justice Scalia reasoned, was all that was necessary. As author of the original TV series, Fox was upset at not being credited - but it should have renewed its copyright if it wanted to preserve that authorial protection. If so, Justice Scalia pointed out, "it would have had an easy claim of copyright infringement."

Trademark law protects consumers, not authors. And consumers, Justice Scalia suggested, probably wouldn't care if Fox was credited or not. "The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to consumers," he warned.

Otherwise, Justice Scalia pointed out, the result would be to "create a species of mutant copyright law," and a sort of "perpetual patent and copyright," which would contravene the Copyright Clause's protection of copyrights for only limited terms.

The Dastar Decision's Significance: The Idea of Multiple Creators

The Dastar decision is significant in several different ways.

First, the Court recognized that creativity often does not flow from a single source. Fox claimed to be the true "origin" of the videos Dastar sold, but the Court made clear it was not as easy as that: "[i]n many cases, figuring out who is in the line of 'origin' would be no simple task."

Indeed, because Fox's own "involvement with the creation of the television series was limited at best," the Court suggested that Time, Inc. "was the principal if not the exclusive creator." Moreover, there were also other contributors: Eisenhower, who wrote the book; and the United States Army, Navy, and Coast Guard, which provided much of the film footage.

The Court noted that, "If anyone has a claim to be the original creator of the material used in both the Crusade television series and the Campaigns videotapes, it would be those groups, rather than Fox." However, it declined to adjudicate who the original creator actually was, for "[w]e do not think the Lanham Act requires this search for the source of the Nile and all its tributaries."

In endorsing this idea of multiple originators, the Court may have cast a shadow on the myth of the "romantic author." Popular in copyright jurisprudence, the myth holds that a creative work is typically the result of spontaneous, individual genius.

Dastar's Embrace of the Public Domain

Second, Dastar is significant because it stressed that the public domain is essential for creativity. The public domain allowed Fox to obtain the war footage for "Crusades" in the first place. Fifty years later, at a historic moment, the public domain allowed Dastar to share this and other footage with a wider audience at a reasonable cost.

In the past, as noted above, property holders had to take affirmative steps to renew copyright -as Fox failed to do. Now, however, the copyright term is automatic; copyrights need not be renewed.

Predictably, the omission of a renewal requirement has harmed the public domain. For this reason, Stanford law professor Larry Lessig and others have sought to revive the renewal requirement via a petition to Congress. According to the petition, works for which the copyright is not renewed would fall into the public domain after fifty years. Their hope in doing so is to increase the number of works that may accidentally fall into the public domain, as did Fox's series.

As long as the automatic renewal provision is in place, cases with facts like Dastar's will be few and far between. But the Court's opinion in Dastar is very significant nonetheless, for what it says about authorship and the public domain.

Madhavi Sunder is Professor of Law at the University of California, Davis. A graduate of Stanford Law School and Harvard College, she specializes in women's international human rights and intellectual property.